INTA Bulletin

July 1, 2016 Vol. 71 No. 11 Back to Bulletin Main Page

Enforcement Committee Members Weigh in on Recognition of Cross-Border Judgments in IP Cases

The draft text of the Hague Convention on the Recognition and Enforcement of Foreign Judgments, as presented to the Council on General Affairs and Policy (Council) by the Working Group of the Hague Convention in November 2015, has had a long and complicated history. The idea of the Convention was conceived in 1992 when dissolving borders required solutions to two problems; namely, (1) clarifying and regulating the international jurisdiction of courts and (2) the recognition and enforcement of foreign judgments. Subsequently, several drafts were presented but consensus could not be reached, specifically with regards to the cross-border recognition and enforcement of judgments. However, stakeholders were able to agree on the treatment of choice of court agreements, which led to the enactment of the Hague Choice of Courts Convention in 2005, regulating prorogation as well as the recognition and enforcement of judgments resulting from such agreements. The Choice of Courts Convention is presently in force between Europe (except Denmark) and Mexico, the United States, Singapore, and Ukraine. In 2011, the Council decided to revisit the Judgments Project and a Working Group was established to prepare a draft regulation on the recognition and enforcement of regular judgments.

A Balancing Act

The task force within INTA’s Enforcement Committee—General Trademark Enforcement Matters Subcommittee (GTMEM SC) is presently working on comments to this draft text from the perspective of trademarks that are the subject of judgments in cross-border enforcement cases. This entails balancing the generally territorial nature of trademark rights and registrations against the advantages of facilitating cross-border enforcement activities.

The draft Convention as prepared in 2015 is subject to comments and discussions among all stakeholders before the Special Commission, the first meeting of which took place from June 1–9, 2016, in The Hague. INTA was invited to participate in this meeting as an observer and was represented by Geert Johann Seelig (Luther Rechtsanwaltsgesellschaft, Germany), the GTMEM SC Task Force leader, and Iris Gunther, INTA’s Senior Advisor, External Relations – Enforcement, on June 6 and 7, when the discussions on IP took place.

An Intense Debate

The meeting was attended by delegates from the 80 Member Countries as well as observers such as the European Patent Office, WIPO, the United Nations Commission on International Trade Law, and the International Bar Association. Members were invited to comment on each article of the draft law during the plenary session and some of the interventions sparked exhaustive discussions on principles of law and practical concerns regarding their cross-border implementation.

One of the most controversial topics was whether and to what extent the Convention should apply to judgments in IP matters. One side of the debate supports the position that the Convention should not apply to any IP judgments at all due to the territorial nature of these rights, instead leaving enforcement of judgments to the IP-issuing state. The opposing opinion emphasizes the benefits of cross-border enforcement of IP judgments for IP right owners and recommends addressing the special nature of IP rights by including restrictions to the enforcement in the Convention. In addition, questions such as the expansion of the scope to use-based rights, the inclusion of plant breeders’ rights and similar, as well as the correct application to regional rights where the issuing authority may not be identical with the territory of validity (such as the EUTM), were thoroughly discussed.

The Road Ahead

Ultimately, there was consensus that additional, detailed, expert advice was needed to enable the delegates to decide on whether and to what extent to include IP judgments under the Convention. While this may seem a disappointing outcome, it actually creates a valuable opportunity for INTA to ensure the consideration of trademark rights in a meaningful way during the legislative process and subsequently in the final Convention. INTA has offered to cooperate with the special IP Working Group in its efforts to draft detailed, specialized IP provisions before the next Special Commission meeting in February 2017.

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© 2016 International Trademark Association